Texas Digital Systems:
The Use of Dictionaries in Claim Construction
Jennifer C. Kuhn, April 16, 2003
Law Office of Jennifer C. Kuhn
jenkuhn@austin.rr.com
512-502-1334
Main Points of Texas Digital
308 F.3d 1193 (Fed. Cir. 2002)
► Dictionaries
are not extrinsic evidence, and judges
may look to dictionaries sua sponte at any stage
of the litigation. 308 F.3d at 1202.
► When
determining the meaning of an ambiguous
claim term, judge should look to dictionary first,
and then look to the specifications in order to
avoid importing limitations into the claims. 308
F.3d at 1204.
Background
► Texas
Digital (TDS) sued Telegenix on four patents
“directed to the methods and devices for
controlling the color of pixels in a light emitting
diode (“LED”) display.” 308 F.3d at 1197-98.
► Jury
returned a verdict of infringement and
willfulness. 308 F.3d at 1201.
► Damages,
enhanced damages and interest totaled
nearly $40 million. 308 F.3d at 1201.
Background (cont.)
► Telegenix’s
appeal focused on claim
construction, and expert testimony.
► Dictionaries
were used during claim
construction, but were not subject of
tremendous controversy during District
Court proceedings. 2000 WL 1801849 (Dec.
6. 2000 N.D. Tex.).
Background (cont.)
► District
by:
Court “set up” the Federal Circuit’s opinion
 stating that intrinsic evidence should be reviewed
before extrinsic (and excluding any discussion of
dictionaries);
 stating that if claim term is ambiguous, with no
meaning in the prior art, meaning must be found
elsewhere in the patent; and
 stating that court cannot review extrinsic evidence if
spec or file history unambiguously defines scope of
claims. Id., at *2.
Result of District Court’s Rule
► Claim
terms would be defined by
specification if terms were ambiguous, not
only if patentee acted as his own
lexicographer;
► No extrinsic evidence could be used to
resolve claim ambiguity if specification gave
enough meaning to claim for construction
purposes.
Federal Circuit’s Response:
The Contours of Claim Construction
► “Educational”
section entitled “The Contours of
Claim Construction” precedes the claim
construction analysis:
 In construing claims, focus must begin, and remain
centered on the language of the claims themselves,
 Claim terms “mean what they say” and have ordinary
meaning attributed by POSIA
 Claim terms receive full range of ordinary meaning (as
understood by POSIA).
308 F.3d at 1201-02.
Texas Digital Issue 1: Due Process
► If
a District Court of Federal Circuit panel
selects a dictionary definition sua sponte, as
Texas Digital allows, doesn’t this deprive the
parties the opportunity to litigate the issue
of whether or not the definition is
appropriate, and violate the parties due
process rights?
Issue 1 as Arising in Texas Digital
► Two
patents contained claim limitation “repeatedly,
substantially, simultaneously, activating.”
► District Court construed “repeatedly” as repeating,
and “substantially, simultaneously activating” as
during some portion of the period defined by
repeatedly, the two separate lights are on at the
same time. 308 F.3d at 1205.
► Federal
Circuit found that this approach ignored
meaning of “activating.” 308 F.3d at 1206.
Issue 1 as arising in Texas Digital,
(cont.)
► Federal
Circuit turned to definition of “activate”
(not “activating”) in Modern Dictionary of
Electronics (6th ed. 1984). 308 F.3d at 1206.
► Definition: “To start an operation, usually by
application of an appropriate enabling signal.”
► Claim phrase then construed to mean during some
portion of the period defined as “repeatedly” the
two separate lights are turned on at the same or
nearly the same time. Id.
Issue 1 as arising in Texas Digital
(cont.)
► The
Modern Dictionary of Electronics was
not in the record below, nor, apparently, was
it presented by either party on appeal.
► Neither party had opportunity to provide
rebuttal definition of “activating,” or
challenge use of definition of “activate”
instead of “activating.”
Definitions: question of law or fact?
► If
a question of fact, court could take
judicial notice. Title 28, Rule 201 addresses
judicial notice of adjudicative facts:
 Fact cannot be subject to reasonable dispute;
 Judicial notice may be taken at any stage of the
proceeding;
 Party is entitled (upon timely request) to an
opportunity to be heard as to the propriety of
taking judicial notice.
Law or Fact? (cont.)
► Thus,
dictionary definition could be subject
of judicial notice as a fact if met other
requirements and Federal Circuit created
procedure for parties to have an opportunity
to be heard.
► ABA IP Section Appellate Practice
Committee has recommended just such an
approach.
► Unlikely that this would be adopted.
Law or Fact? (cont.)
► If
a question of law, the Federal Circuit
would not need to take judicial notice.
However, it is not clear that identifying
relevant dictionary definitions, sua sponte,
is permissible even if this is a question of
law.
 Opinion equates use of dictionaries in claim
construction to their use in statutory
construction and contract interpretation. 308
F.3d at 1203.
Supreme Court’s Use of Dictionaries:
Law or Fact? (cont.)
► The
Supreme Court frequently uses
dictionaries to define terms during statutory
construction in civil matters:
 In Pennoyer v. Neff, 95 U.S. 714 (1878) the
Supreme Court used an early edition of
Webster’s to define “editor.”
 In National Endowment for the Arts v. Finley,
524 U.S. 569 (1998) the Supreme Court defines
“taking into consideration” by reference to
Webster’s New International.
Supreme Court’s Use of Dictionaries:
Law or Fact? (cont.)
► Black’s
Law Dictionary also a favorite of the
Supreme Court.
► Dictionaries, as well as other standard literary
reference works, relevant judicial pronouncements
on the ordinary meaning of such words, and prior
legal history may be used to interpret a statute.
See Ernst and Ernst v. Hochfelder, 425 U.S. 185,
199 (1976); Pittston Coal Group v. Sebben, 109 S.
Ct. 414, 420 (1988); and United States v. Ron Pair
Enters. Inc., 109 S. Ct. 1026, 1030-31 (1989).
Conclusion: Law or Fact?
a question of fact (contra Markman) then
District Court and Fed Cir would have to
introduce a new procedure to allow parties
to be heard on definition. (Unlikely)
► If a question of law, (per Markman) then
Federal Circuit has some additional freedom
to refer to the dictionaries of its choice.
Each patent is treated like the prima facie
interpretation of a new statute.
► If
Texas Digital Issue 2:
► How
do parties and District Court judges
determine which dictionaries should be used
to construe claims?
► (The
answer to this issue implicates a
number of other questions.)
Issue 2 as arising in Texas Digital
► Modern
Dictionary of Electronics (6th ed. 1984)
was cited for patents filed in October 1986, and
March 1989.
► This dictionary is (apparently) not a common
electronics dictionary.
► Penguin Dictionary of Electronics, (3d ed. 1998)
did not include the terms “activate” or “activating.”
► The New IEEE Dictionary (1993) does not contain
the term “activating” and defines “activate” by
reference to “assert.”
Which dictionary?
► 1.
A dictionary publicly available at time that
patent issued, not when filed.
► 2. A dictionary with a definition that harmonizes
with the context of the art in question, the
specification, and the file wrapper.
► 3. All dictionaries with definitions that harmonize
with the art, specification and file wrapper.
► 4. No dictionary if the specification or prosecution
history rebuts the presumption that the term
carries its ordinary and customary meeting.
1. Publicly available at time of
issuance.
► “Dictionaries,
encyclopedias and treatises,
publicly available at the time the patent is
issued, are objective resources that serve as
reliable sources of information on the
established meanings that would have been
attributed to the terms of the claims by
those of skill in the art.” 308 F.3d at 120203. (citing Dow Chem. Co. v. Sumitomo
Chem. Co. 257 F.3d 1364, 1372-73 (Fed. Cir.
2001)).
Which dictionary? (cont.)
2. Definition with right context.
► “Because
words often have multiple
dictionary definitions, some having no
relation to the claimed invention, the
intrinsic record must always be consulted to
identify which of the different possible
dictionary meanings of claim terms in issue
is most consistent with the use of the words
by the inventor.” (citing Renishaw PLC v.
Marposs Societa’ Per Azioni, 158 F.3d 1243
(Fed. Cir. 1998)).
2. Context
► The
use of the intrinsic record to determine
context will help to determine
 if the term has a special meaning in the art
(meaning any definition from a technical
dictionary will supercede one from a standard
dictionary);
 which of potential definitions from relevant
dictionary are appropriate.
Which dictionary? (cont.)
3. All definitions with right context.
►“
If more than one dictionary definition is
consistent with the use of the words in the
intrinsic record, the claim terms may be
construed to encompass all such consistent
meanings.” 308 F.3d at 1203. (citing
Rexnord Corp. v. Laitram Corp., 274 F.3d
1336, 1343 (Fed. Cir. 2001)).
3. All definitions with right context.
► Claim
may be construed to cover all
definitions that harmonize with the intrinsic
evidence.
► Broader scope appears to be permissive, not
mandatory.
► Prudent approach may be to provide
multiple definitions to provide the broadest
possible coverage.
Which dictionary? (cont.)
4. None if spec. rebuts ord. mng.
► “Moreover,
the intrinsic record also must be
examined in every case to determine whether the
presumption of ordinary and customary meaning
is rebutted. Indeed, the intrinsic record may show
that the specification uses the words in a manner
clearly inconsistent with the ordinary meaning
reflected, for example, in a dictionary definition.
In such a case, the inconsistent dictionary
definition must be rejected.” 308 F.3d at 1204.
(citing Renishaw, 158 F.3d at 1250).
4. Specification can rebut def’s.
► Specification
is still the best evidence, as
stated in Vitronics. The specification can
trump a dictionary, but a dictionary cannot
trump specification.
► Same
principle applies for claim scope
clearly abandoned during prosecution
Conclusion
► Texas
Digital is really a product of a
particular District Court opinion that
prompted a comprehensive tutorial from the
Federal Circuit.
► All
of the particular issues relating to
dictionary use came from earlier decisions,
merely summarized in this decision.
Questions
► Jennifer
C. Kuhn
► jenkuhn@austin.rr.com